A recent Ninth Circuit case, Garcia v. Google, held that an actor can maintain a copyright interest in her acting performance in a film—independent of the copyright held by the filmmaker—and that this copyright can sometimes be sufficiently powerful to allow the actor to prevent public dissemination of the film.1 The decision has been widely criticized for its interpretation of the Copyright Act, its First Amendment implications, and its potential economic impact on the film and television industries.2 But few have considered the point that “related rights”—an alternative form of intellectual property distinct from copyright and designed to protect performances and recordings—could provide a more effective way of balancing the many interests at stake in cases like Garcia. Related rights protection for acting performances is not currently available in the United States, although it is widely recognized under international law and in the laws of many European countries. This means that, under American law, acting performances must either be governed by conventional copyright law or receive no IP protection at all. By adding related rights protection to American law, Congress could stake out a middle ground between these two extremes and thus prevent quagmires like Garcia from emerging in the future.

I. garcia v. google

When Cindy Lee Garcia was paid $500 to act in Mark Basseley Youssef’s film Desert Warrior, she thought she was appearing in a low-budget action movie set in the Middle East.3 Little did she know that Youssef had other plans; Desert Warrior was never completed and Youssef instead used Garcia’s short performance in the infamous Innocence of Muslims YouTube video. That fourteen-minute film, which includes an offensive depiction of the Prophet Muhammad’s life, sparked violent protests throughout much of the Muslim world in 2012. Although Garcia’s partially dubbed performance only appeared in the film for several seconds, she received numerous death threats.4 After Google refused to remove the video, Garcia sought an order forcing Google to take it down, advancing the theory that Innocence of Muslims infringed her copyright in her performance. The U.S. District Court for the Central District of California refused to grant Garcia a temporary injunction, and the case was appealed to the Ninth Circuit.5

In February 2014, the Ninth Circuit issued a highly controversial opinion6—later amended slightly in July 2014—reversing the district court.7 The Ninth Circuit found that Garcia “likely has an independent [copyright] interest in her performance,” that she never relinquished her rights in this performance to Youssef, and that an injunction was warranted.8 Chief Judge Kozinski, writing for a divided panel, focused on the question of whether Garcia’s performance in the film evinced the “minimal degree of creativity”9 necessary for copyright protection. The U.S. Copyright Act protects all “original works of authorship fixed in any tangible medium of expression,”10 including, but not limited to, a set of enumerated categories (such as literary works, visual arts, and the like) that does not include acting performances.11 When considering works that fall outside the categories explicitly listed in the Copyright Act, courts often inquire into whether a work is sufficiently creative to warrant protection.12 The Ninth Circuit panel, guided by the Supreme Court case Feist Publications, Inc. v. Rural Telephone Service Co.13 and a set of treatises,14 found that Garcia’s performance had met this burden and was therefore protected by copyright.15

The facts presented in Garcia are highly unusual; courts rarely have the opportunity to address the issue of whether film actors maintain independent copyright interests in their performances. Most actors sign contracts that treat all contributions to a film as works made for hire, thereby ensuring that the film’s producers hold the only copyright in the final product.16 In cases where the work-for-hire doctrine does not apply, courts have found that choosing to contribute to a film generally creates an implied nonexclusive license under which film producers may use the contribution—such as acting, special effects, or sound editing—as they see fit.17 In Garcia, the Ninth Circuit addressed these points, finding that neither the work-for-hire doctrine nor an implied license barred Garcia from asserting a copyright claim, primarily because of Youssef’s fraudulent misrepresentation of the nature of the film.18

Even though the facts of Garcia seem fairly sui generis, the Ninth Circuit’s decision has galvanized scholars, activists, and members of the entertainment industry, many of whom have condemned the holding. The court’s finding that Garcia likely has a copyright interest in her performance, and that this interest is powerful enough to force Google to remove Innocence of Muslims from the Internet, has been criticized in particular for its First Amendment implications.19 While Chief Judge Kozinski cursorily stated that the “First Amendment doesn’t protect copyright infringement,”20 commentators—echoing a point made by Google in some of its briefing21—have pointed out that allowing Garcia to force Google to remove the entire film, including non-infringing content, seems akin to allowing a prior restraint on (non-infringing) speech.22 Others have argued that the decision will cause significant (and expensive) legal problems for makers and distributors of films, TV shows, and documentaries.23 Some have also questioned the Ninth Circuit’s broad interpretation of U.S. copyright law. Most notably, Judge N. Randy Smith, writing in dissent, argued forcefully that Garcia’s performance was not covered by the Copyright Act because Garcia’s acting performance was not a “work” under the Act’s definitions, did not evince the requisite level of creativity for Garcia to be considered an “author,” and was not “fixed” under the meaning of the Act.24 The U.S. Copyright Office seems to share this skepticism, as it recently denied Garcia’s request to formally register her copyright, claiming that “longstanding practices do not allow a copyright claim by an individual actor or actress in his or her performance contained within a motion picture.”

II. a “related rights” alternative

Despite the many serious concerns that the Garcia opinion has raised, the criticism has largely failed to offer any alternative remedy for the harms that Garcia suffered. In addressing the questions posed in the case, Judge Kozinski seemed trapped between a rock and a hard place. Denying Garcia any IP protection would have left her with no recourse—no means by which to prevent Youssef from misusing her performance. But the only source of protection seemingly available to the court was copyright, which provided Garcia with a set of tools that was far too powerful: powerful enough, in fact, to completely prevent the public dissemination of the film.

Yet there may actually be a middle ground between full copyright in acting performances and no protection at all. International IP law has long recognized “related rights” or “neighboring rights”: intellectual property rights in forms of expression distinct from the more conventional objects of copyright law (like novels, films, visual art, or musical compositions) that provide rights-holders with protection similar to copyright, though often with greater limitations.26 Related rights generally cover forms of expression that involve performing or recording existing fixed (and usually copyright-eligible) works, such as screenplays or musical scores.27 Indeed, the categories of related rights currently recognized under international law include performances, sound recordings (also known as “phonograms”), broadcasts, databases, and more.28 While the most widely ratified treaty on copyright, the Berne Convention,29 does not cover related rights, a set of additional treaties have been crafted that provide related rights protection. Of these, the most important is the Rome Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations;30 this treaty dictates the minimum level of protection that states must grant performers (defined as “actors, singers, musicians, dancers, and other persons who . . . otherwise perform literary or artistic works”31), producers of sound recordings, and broadcasters.32To implement the Rome Convention and later related rights treaties, many countries have created explicit statutory provisions, separate from the provisions that govern copyright, to protect these groups.33 Such statutes often provide protection that is less stringent than copyright.34

Right now, related rights are not sufficiently recognized under American law to provide Garcia with any rights in her performance. The United States has never signed the Rome Convention. Thanks to pressure from the music industry,35 it has signed several later treaties that grant related rights protection to audio performers and producers of sound recordings, but these conventions do not protect audiovisual performers, like actors.Specifically, the United States has signed the TRIPS agreement, which protects audio performers and producers,36 and the World Intellectual Property Organization (WIPO) Performances and Phonograms Treaty, which does the same.37 The United States complies with these treaties through the Copyright Act, which grants full copyright protection to sound recordings,38 as well as through some provisions of the Digital Millennium Copyright Act (DMCA).39 Unlike many European countries, American law does not use the language of “related” or “neighboring” rights in implementing its treaty obligations; it instead covers rights in sound recordings under the umbrella of conventional copyright law40 (though, as some commentators have pointed out, the Copyright Act in effect adopts a related rights approach by adding some limitations to copyright protection in sound recordings that do not apply to other subjects of copyright law).41

Changing American law to distinguish more explicitly related rights from copyright and to provide statutory recognition of related rights in audiovisual (that is, acting) performances could help solve the problem posed in Garcia. The concept of related rights is useful because it stakes out a compromise between applying the rigidities of copyright law to performances and providing no IP protection at all. In recognizing related rights, legal systems acknowledge that genuine human creativity goes into acting a script or performing a music composition, but also that this creativity is different in kind and in degree from the creativity that goes into creating the fixed, author-driven works, like literature and visual art, that are the more obvious objects of copyright protection.42 France and Germany, for example, use a related rights framework to exclude performers from full copyright protection, instead providing them with a more limited set of moral and economic rights.43 German law even creates a special categorical rule that once a performer has contracted with a producer to participate in a film, he is presumed to have transferred most of his rights in that performance to the producer even in “case[s] of doubt.”44

These examples demonstrate that related rights protection need not rise to the full level of copyright and can be tailored to concerns such as those posed in Garcia—concerns that include preventing “the numerous creative contributions that make up a film [from] quickly becom[ing] entangled in an impenetrable thicket of copyright.”45 In crafting related rights legislation, Congress might follow this model. Indeed, one scholar has suggested that only damages, and not injunctive relief, should be available for actors asserting IP claims in their performances46—an approach that would prevent actors like Garcia from using IP law to prevent the dissemination of an entire film.

In practical terms, it would be helpful if the United States signed the Rome Convention, which explicitly provides related rights protection to performers and would establish a framework for changing American law to provide related rights, rather than copyright, protection to acting performances.47 However, absent implementing legislation, signing the Rome Convention alone would not do much to solve the Garcia problem.48 The United States recently signed a different related rights instrument, the Beijing Treaty on Audiovisual Performances, which is designed to provide IP protection for audiovisual performances.49 However, Beijing is not necessarily a step in the right direction. Many have argued that the treaty—which provides minimum standards of protection significantly more stringent than those of the Rome Convention50—is overprotective of performances and would abolish the distinction between related rights and copyright, forcing signatories to essentially provide full copyright protection to performances.51 Furthermore, Beijing will not enter into force until it has been ratified by thirty signatory states, and so far only two countries have ratified it.

Even absent implementing legislation that clearly establishes related rights protection in United States law, however, signing the Rome Convention might still prove useful in preventing outcomes like Garcia. As in many copyright cases, the core of the problem presented in Garcia was one of statutory interpretation. Chief Judge Kozinski, guided by Feist, found that an acting performance could be considered a “work” under an interpretation of the Copyright Act.52 If the United States were to sign the Rome Convention, this step might be seen as signaling its acknowledgment of the international IP norm that acting performances are outside the scope of copyright and instead a matter for related rights protection. Under the Charming Betsy canon of statutory interpretation,53 which advises courts to interpret U.S. statutes in ways that do not conflict with international law or international agreements ratified by the U.S. government,54 such a signal might be sufficient to create a presumption against reading acting performances into the Copyright Act.55 If recognized, such a presumption could prevent future courts from reaching holdings like Garcia—though this is not a necessary result.

The international instruments that establish related rights in performances do not offer an easy fix to the problem posed in Garcia v. Google. But between the options of full copyright in acting performances or no protection at all, related rights, as a concept, offers a promising avenue for negotiating among the concerns of actors like Garcia, the economic interests of the entertainment industry, and the free speech rights of the general public.

Jacob M. Victor is a Visiting Fellow at the Yale Information Society Project. He would like to thank Erica Newland and the editors of the Yale Law Journal for their helpful feedback.

Preferred Citation: Jacob M. Victor, Garcia v. Google and a “Related Rights” Alternative to Copyright in Acting Performances, 124 Yale L.J. F. 80 (2014), http://wwww.yalelawjournal.org/forum/garcia-v-google.